DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
The instant application is a Continuation of earlier application 17/688,356 filed 9 February 2022.
Status of the Claims
Claims 1-17 are pending, presented for examination and rejected as set forth below.
Claim Interpretation
Applicants claims are directed to methods of making solutions of hypochlorous acid or hypochlorite by the electrolysis of a sodium chloride solution. The skilled artisan would recognize this as describing a method of forming what is commonly referred to as “electrolyzed oxidizing water,” or EOW. In particular, the claims describe employing an electrolysis cell comprising an anode having a first NaCl solution feed line, a cathode having a second NaCl feed line, having a separator disposed between the anode and cathode, and applying direct current between the poles of the cell once filled with a NaCl solution having a defined concentration of NaCl and defined conductivity to provide a anodic and cathodic solution disposed on either side of the separator. The method includes a step of combining a portion of the cathodic solution with any of the aqueous NaCl solution, the anodic solution on the anodic portion of the electrolysis cell, or with the anodic solution in a discharge line associated with the anodic compartment, specifying that the resultant solution has a pH within a defined range, contains chlorate and hypochlorous acid/hypochlorite concentrations within defined ranges, has a defined electrical conductivity, and has a molar ratio of hypochlorous acid/hypochlorite to chloride ions within a defined range. Dependent claims limit the conductivity of the aqueous NaCl solution, the concentration of NaCl in the solution, or specify the solution is to possess an “evaporation residue,” which applicants specification indicates reflects the amount of salts and solids dissolved in the solution, of defined quantities. Further dependent claims specify the pH of the NaCl solution or water used in the process, or indicate that defined concentrations of carbonate, copper/nickel/iron, nitrate/nitrite, sulphate/phosphate/silicate, calcium/magnesium ions are to be present in the NaCl solution. Further dependent claims define flow rates and temperatures to be employed in the process.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Shupe (WO2019/165474), in view of Robertson (U.S. PGPub. 2015/0119245), Chen (U.S. 8,709,495), and Ozawa (JP 2020143051)(Machine translation provided; all references are to the machine translation)(all references of record in the parent ‘356 application).
Shupe describes methods and apparatuses used for the formation of electrolyzed oxidizing water (EOW). (Abs.). Specific embodiments of the electrolyzed oxidizing solution contain the hypochlorous acid of the present claims in concentrations of between 1-10,000,000ppm, a range overlapping and rendering obvious the concentrations of Claim 1. (Pg.21, L.20-25; Pg.51, L.3-5). In particular, Shupe describes using an electrolytic cell having an anode compartment and corresponding fluid inlet, a cathode compartment and corresponding fluid inlet, separated by a spacer, and having fluid outlets configured to channel and combine fluid products from both the anode and cathode compartment, addressing the electrolysis cell limitations including element (iii) of Claim 1. (Pg.8, L.2-13). Shupe indicates that unreacted chloride is present in oxidizing water as well as in electrolyzed alkaline water, and that electrolyzed alkaline water produced at the cathodic cell of the apparatus which is combined with the oxidizing water may possess any suitable chloride concentration. (Pg.46, L.28-30). Combined with the teachings concerning the quantities of hypochlorous acid or hypochlorite to be present in these solutions, the limitations of Claim 1 concerning the molar ratios of hypochlorous acid/hypochlorite to chloride are prima facie obvious. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (indicating that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.). Direct current is specified as a suitable source of power for the electrolysis process. (Pg.38, L.16-20). The source of water to be used in such processes is not particularly limited, including each of softened, deionized, distilled, descaled water, and reverse osmosis water. (Pg. 3, L.12-18). While not explicitly recited, by describing the water to be used as each of deionized and purified by reverse osmosis, coupled with the explicit absence of art describing the inclusion of any of the copper, nickel, iron, nitrate, nitrite, sulphate, phosphate, silicate, calcium, or magnesium ions, the exclusion of each of these ions by the terms of Claims 10-13 is presumed to have been achieved by the reverse osmosis purification of the water to be used. In a similar manner, deionized water recited by Shupe as the feedstock for the electrolysis reaction would lack either hydronium or hydroxide ions to shift the pH from neutral, therefore addressing the limitations of Claim 8. The skilled artisan would therefore have looked to the teachings of Chen, which also describes the production of highly stabilized electrolyzed oxidizing water by the electrolysis of sodium chloride solutions. (Col.1, L.10-26). Chen indicates that these oxidizing waters are produced to preferably have a pH of about 6.0 and a chlorate concentration of less than 1mg/l, a range overlapping and rendering obvious the limitations of Claim 1, addressing the limitations of Claim 1. (Col.5, L.27-32; Col.12, L.53-56). Chen indicates that in processes of producing EOW, a preferred source of water for use is the reverse osmosis water suggested by Shupe, owing to the fact that the conductivity of the water can be controlled, preferably to a conductivity of about 1 mS/cm, addressing the limitations of Claims 2, 5, and 6. (Chen, Col.10, L.36-54). Chen further indicates that the elimination of heavy metals such as the nickel of Claim 10 is theorized to further contribute to the stability of these solutions. (Col.11, L.7-30). In addition, the teachings of Ozawa establish that reverse osmosis water having a conductivity of less than 1 mS/m not only contributes to the stability of aqueous hypochlorous acid solutions, but reduces or eliminates the undesirable and unsightly precipitation of salts from the solution. (Pg.2-3). While not recited in the same language as the present claims reference to “evaporation residue,” Ozawa appears to acknowledge the deposition of residue following application of electrolyzed oxidizing water as a problem and suggests that particularly pure water with a defined conductivity obtained via the reverse osmosis described by each of Shupe and Chen as a solution to the problem. The art therefore establishes that water purity contributes to the residual appearance of EOW applied as a disinfectant, rendering the quantity of depositable solutes a result-effective variable suitable for optimization through routine experimentation, thereby rendering the evaporation residue limitations of Claims 4 and 7 obvious. See Aller, supra. Shupe indicates that the source of electrolyte is not particularly limited, but can be included in concentrations of about 0.1% (Pg.3, L.26-33). The sodium chloride of the instant claims is recited by Shupe as a particular electrolyte to be used in such a method and apparatus, resulting in the formation of the hypochlorous acid claimed in the anodic side of the cell, with the solution in the cathodic side of the cell forming a basic electrolyzed alkaline solution and thereby addressing limitations of Claims 1 and 3. (Pg.22, L.14-32; Pg.47, L.14-17). Shupe indicates that the electrolysis apparatus is to be provided with various pumps, temperature and flow sensors which are used to control, among others, the temperature at which the reaction is to occur as well as the flow of solution into the cell and of EOW out of the cell. (Pg.32-35; 39). Indeed, Shupe explicitly describes monitoring the apparatus to optimize temperature and fluid flow and in doing so renders the flow rate of Claim 16 and the temperature of Claim 17 the result of routine optimization by a skilled artisan and obvious thereby. See Aller, supra. Shupe indicates that chemicals such as sodium carbonate may suitably be added to the electrolyzed oxidizing water. (Pg.15). Again going back to the teachings of Ozawa, the skilled artisan would be aware that carbonates such as sodium carbonate incorporated into EOW serve to adjust the pH of the EOW into which they have been included, ideally in concentrations of less than 0.1%, a range overlapping and therefore rendering obvious the limitations of Claims 9, 14 and 15. (Ozawa, Pg.3). While not recited as the hydrogen carbonate of instant Claim 15, the skilled artisan would appreciate that in an acidic environment such as is advocated by each of Ozawa, Shupe, and Chen, the carbonate would exist primarily in the protonated form of the present claims.
Robertson goes further, establishing that it was well-known at the time of the instant application’s filing that a means of providing water for the generation of EOW involves softening the water to remove calcium and magnesium per the terms of Claim 13, which is then subject to the reverse osmosis process taught by each of the Shupe, Ozawa, and Chen references. This purified water is then split into two streams, one of which is saturated with NaCl and then recombined with purified water in the electrolysis chamber per the terms of Claim 5. [0076].
The presently claimed process of deionizing, softening, and reverse-osmosis purifying neutral water to a conductivity of less than 2 mS/CM with minimal residual solids and containing no copper, nickel, iron, nitrate, nitrite, sulphate, phosphate, silicate, calcium, or magnesium ions to be combined with NaCl to form a saturated salt solution which is then recombined with purified water to provide an electrolysis solution with a NaCl concentration of about 0.1% which is added to each of the anodic and cathodic chambers of an electrolysis cell separated by a barrier at a rate of between 0.1-1m/s at a temperature between 2-20°C, across which a DC voltage is applied to generate an acidic electrolyzed oxidizing solution which is extracted from the anodic portion of the electrolysis cell before being recombined with a portion of the cathodic solution to provide an acidified OW with a pH of about 6 into which is added about 0.1% of carbonate as a buffer appears to be little more than the skilled artisans use of method steps which were taught in the prior art as means of usefully providing electrolyzed oxidizing water. Each of the process steps, apparatus used, reactants and reactant concentrations, reaction conditions, and resultant properties recited by the claims were taught individually by art available well before the present application was field as useful in providing precisely the storage stable EOW applicants claim result from the process they recite in their claims. It must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been prima facie obvious to have employed a process of deionizing, softening, and reverse-osmosis purifying neutral water to a conductivity of less than 2 mS/CM with minimal residual solids and containing no copper, nickel, iron, nitrate, nitrite, sulphate, phosphate, silicate, calcium, or magnesium ions to be combined with NaCl to form a saturated salt solution which is then recombined with purified water to provide an electrolyzable solution with a NaCl concentration of about 0.1% which is added to each of the anodic and cathodic chambers of an electrolysis cell separated by a barrier at a rate of between 0.1-1m/s at a temperature between 2-20°C, across which a DC voltage is applied to generate an acidic electrolyzed oxidizing solution which is extracted from the anodic portion of the electrolysis cell before being recombined with a portion of the chloride-containing cathodic solution to provide an acidified OW with a pH of about 6 into which is added about 0.1% of carbonate as a buffer, containing the concentrations of chlorate, hypochlorous acid/hypochlorite, and chloride of the present claims from within the teachings of the prior art, to arrive at processes and compositions “yielding no more than one would expect from such an arrangement.”
Conclusion
No Claims are allowable.
This is a Continuation of applicant's earlier Application No. 17/688,356. All claims are identical to, patentably indistinct from, or have unity of invention with the invention claimed in the earlier application (that is, restriction (including lack of unity) would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN M BASQUILL whose telephone number is (571)270-5862. The examiner can normally be reached Monday through Thursday, 5:30 AM to 4 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571) 272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN M BASQUILL/Primary Examiner, Art Unit 1614
